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Software Patenting in Crisis, Part III

By Jonathan T. Kaplan, Esq.                                   February 7, 2014

The US Supreme Court is currently considering what many thought was already a settled question: whether computer-implemented inventions are eligible for patenting.

(please also see Parts I and II)

The most basic question one can ask, regarding an invention under consideration for patenting, is whether it is the kind of invention that is even eligible for this form of IP protection.  The question is governed by § 101 of the US patent laws.  It is a requirement distinct from other, more commonly understood, requirements, such as whether the invention is new (governed by §102) and whether it is non-obvious (governed by § 103).  While § 101 is quite broad, it does have limits, with one of those limits being the prohibition against the patenting of “abstract ideas.”  It is this abstract-ideas exception, that has caused the most difficulty for inventions relying on software for their implementation.

In my posts of October (“Software Patenting in Crisis”) and November (“Blurring of Abstraction and Application Puts Software in Peril”), I discussed an amazingly fractured and confusing decision, issued last May by the Court of Appeals for the Federal Circuit (or “CAFC”): CLS Bank Int’l v. Alice Corp. Pty, LTD.

From 1994 until 2006, the patentability of software-implemented inventions seemed a settled question.  This is due primarily to the CAFC issuing a decision in 1994, called In re Alappat, 33 F.3d 1526 (“Alappat”).  In Alappat, the CAFC reached the common sense conclusion that a general purpose computer, once loaded with special-purpose software, became a kind of special-purpose machine and, like any other machine, is eligible for patent protection.

From 1994, and until 2006, the Supreme Court remained silent on the § 101 issue.  Starting in 2006, however, at least some of the Supreme Court justices began voicing skepticism toward the CAFC’s approach (in LabCorp v. Metabolite, Inc, 548 U.S. 124, 137).  Then, in a flurry of activity not seen in 30 years, the Supreme Court issued a series of three opinions, on the breadth of § 101, in 2010 (Bilski v. Kappos, 130 S. Ct. 3218), 2012 (Mayo v. Prometheus, 132 S. Ct. 1289), and 2013 (Ass’n for Mol. Pathology v. Myriad, 133 S. Ct. 2107).  This level of scrutiny of CAFC decision-making, along with the Supreme Court’s unwillingness to articulate clear alternative standards when addressing § 101, seems to have created the current crisis and confusion, as evidenced by the CAFC’s CLS Bank v. Alice Corp. decision.

In my November post, I noted the general view among legal professionals, that the Supreme Court would likely decide to review the CLS Bank Int’l v. Alice Corp. decision (called “granting cert.”).  On  December 6, the Supreme Court accepted the case.  At this point, Alice Corp.’s brief has been filed, as well as the briefs of any outside parties (called amicus briefs) interested in providing input on a case with such broad implications.  CLS Bank can be expected to submit its brief towards the end of this month, and oral argument, before the Supreme Court, is scheduled for March 31.  A Supreme Court decision can be expected by June or early July of this year.

Mr. Kaplan runs a small IP law firm, specializing in patents, located in the northern suburb of Portland, OR.  He has over 20 years of experience (the first 10 with large nationally-prominent law firms), is admitted to practice law in three states (CA, NY, and WA), and is USPTO registered.

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